Ex parte ECKHARD WOLFGANG et al. - Page 15




          Appeal No. 95-0543                                                          
          Application 08/008,734                                                      


          still consider whether the invention of claims 16 and 17 would              
          have been obvious within the meaning of 35 U.S.C.  103.                    
          The examiner’s prima facie case of obviousness depends                      
          upon his interpretation that layers 3, 2, 16, 17 and 1 of Potter            
          can be considered equivalent to the heat eliminator W4 of                   
          appellants’ invention.  As we noted above, we cannot agree with             
          this interpretation of claim 8.  Absent this structural                     
          equivalence as asserted by the examiner, there is no evidence on            
          the record in this case as to why it would have been obvious to             
          eliminate the intervening layers of Potter and to mount the                 
          carbon component directly onto the heat sink 1.  Thus, there is a           
          difference between claim 8 and the teachings of Potter which has            
          not been addressed by the examiner.  The failure to address this            
          difference between claim 8 and Potter results in a failure to               
          establish a prima facie case of obviousness.  Therefore, we do              
          not sustain the rejection of claims 16 and 17 under 35 U.S.C.              
          103.                                                                        
          In summary, we have sustained the rejection of claims 1,                    
          3, 9 and 10, but we have not sustained the rejection of claims 8,           
          16 and 17.  Accordingly, the decision of the examiner rejecting             
          claims 1, 3, 8-10, 16 and 17 is affirmed-in-part.                           



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